Marvell Semiconductor, Inc.v.Intellectual Ventures I LLC

Patent Trial and Appeal Board

Nov 30, 2015

10143134 (P.T.A.B. Nov. 30, 2015)

Trials@uspto.gov Paper 79
571-272-7822 Entered: November 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MARVELL SEMICONDUCTOR, INC.,
Petitioner,

v.

INTELLECTUAL VENTURES I LLC,
Patent Owner.
____________

Case IPR2014-00552
Patent 6,754,195 B2
____________

Before THOMAS L. GIANNETTI, JAMES A. TARTAL, and
PATRICK M. BOUCHER, Administrative Patent Judges.

GIANNETTI, Administrative Patent Judge.

FINAL WRITTEN DECISION
35 U.S.C. § 318(a) and 37 C.F.R. § 42.73

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I. BACKGROUND
The procedural history of this case is pertinent to this Final Written
Decision. On June 2, 2014, Marvell Semiconductor, Inc. (“Petitioner”) filed
two separate Corrected Petitions to institute inter partes review of claims 1–
23 of U.S. Patent 6,754,195 B2 (“the ’195 patent”) pursuant to 35 U.S.C.
§§ 311–319. (We will refer to the Corrected Petition in each case as the
“Petition.”) The Petition in this case (Paper 6)1 relied principally on a patent
to Webster2 and an article by Castro.3 The second Petition, Paper 7 in case
IPR2014-00553 (“IPR-553”), relied principally on articles by Boer4 and
Wu,5 and a patent to Böhnke.6
Intellectual Ventures I LLC (“Patent Owner”) filed a Preliminary
Response in each case (Paper 14 here; Paper 15 in IPR-553) on September 5,
2014. On December 3, 2014, we entered a single Institution Decision on
both Petitions. Paper 16. The Institution Decision granted Petitioner’s
request in this case and instituted inter partes review of claim 1 of the ʼ195
patent, based upon the combination of Webster and Castro, and claims 2–23,
based upon the combination of Webster, Castro, and one or more additional

1 Unless otherwise indicated, paper and exhibit numbers refer to the record
in this proceeding.
2 U.S. Patent No. 7,274,652 B1 (Sept. 25, 2007).
3 J. Castro et al., “Downlink OFDM Techniques in 3rd Generation TDMA
Based Mobile” (IEEE 1998).
4 Jan Boer, “OFDM in the 2.4 GHz Band,” IEEE HRb Study Group, doc. no.
IEEE 802.11-00/188 (IEEE 2000).
5 Jean-Lien C. Wu, “An Adaptive Multirate IEEE 802.11 Wireless LAN”
(IEEE 2001).
6 U.S. Patent No. 6,567,374 B1 (May 20, 2003).
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prior art references. Id. In the same Institution Decision, for IPR-553, we
concluded that the teachings Petitioner relied upon from Boer, Wu, and
Böhnke were not distinguishable from the teachings of Webster and Castro.
Id. Accordingly, we exercised our discretion under 35 U.S.C. § 315(d) to
deny the request to institute a review in IPR-553.
During the initial conference call for this case, Patent Owner disclosed
its contention that Webster, a prior art reference to the ʼ195 patent under
35 U.S.C. § 102(e), should be disqualified as prior art under the provisions
of 35 U.S.C. § 103(c) applicable to this pre-AIA patent. Prior to the AIA, 35
U.S.C. § 103(c)(1) provided, in relevant part:
Subject matter developed by another person, which qualifies as
prior art only under one or more of subsections (e), (f), and (g)
of section 102 of this title, shall not preclude patentability under
this section where the subject matter and the claimed invention
were, at the time the claimed invention was made, owned by the
same person or subject to an obligation of assignment to the
same person.
Patent Owner requested authorization to file a motion to compel
additional discovery relating to this contention. Petitioner opposed the
request. Paper 19. The Board authorized the motion, the motion was
granted (Paper 29), and depositions of Mr. Webster, his co-inventor, Mr.
Seals, and production of documents by their former employer, Intersil, went
forward. Transcripts of those depositions were entered in the record of this
proceeding as Exhibits 2024 (Webster Decl.) and 2025 (Seals Decl.). In
addition, the record includes two declarations of Mr. Webster (Exs. 1021,
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2038), and a declaration (Ex. 2069)7 and supplemental declaration (Ex.
2090)8 of Intersil’s corporate patent counsel, Mr. Bernkopf. In addition, a
declaration of Annette Vonder Mehden, a paralegal employed by Patent
Owner’s counsel, has been filed by Patent Owner. Ex. 2093.
In light of Patent Owner’s challenge to the status of Webster as prior
art under 35 U.S.C. § 103(c), Petitioner sought rehearing of our decision
denying the Petition in IPR-553. IPR-553 Paper 18. We granted that
request and, on February 20, 2015, instituted an inter partes review of
claims 1–23 of the ʼ195 patent in IPR-553 based on Wu, Böhnke, and other
art of record. IPR-553 Paper 19.
The two cases were consolidated for oral argument (along with a third
case, IPR2015-00548, involving the same parties and related technology).
Oral Hearing for the three cases was held on September 11, 2015. A
transcript of the argument is entered in the record of this case as Paper 78
(“Hearing Tr.”).
We have jurisdiction under 35 U.S.C. § 6(c). This Final Written
Decision is entered pursuant to 35 U.S.C. § 328(a).
For the reasons that follow, we conclude that Patent Owner has
proven, by a preponderance of the evidence, that Webster is not available as
prior art to the ʼ195 patent under the provisions of 35 U.S.C. § 103(c). We
therefore conclude that Petitioner has failed to demonstrate, by a

7 Exhibit 2070 is a version of this declaration with confidential information
redacted.
8 Exhibit 2091 is a version of this supplemental declaration with confidential
information redacted.
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preponderance of the evidence of record in this case, that claims 1–23 of the
ʼ195 patent are unpatentable. We express no views here on the challenges to
patentability of the ʼ195 patent in IPR-553 as those will be addressed in a
Final Written Decision we are issuing concurrently in IPR-553.
II. DISCUSSION
A. The ʼ195 Patent
Although a detailed understanding of the ʼ195 patent is not necessary
for this Decision, some familiarity with the technology is helpful.
The ʼ195 patent is entitled “Wireless Communication System
Configured to Communicate Using a Mixed Waveform Configuration.” The
patent names as co-inventors Mark A. Webster and Michael J. Seals. The
ʼ195 patent is directed to communications involving wireless protocols. As
the Background of the Invention explains, the Institute of Electrical and
Electronics Engineers (IEEE) defined a family of standards known as 802.11
for communication over wireless local area networks (WLAN) in the 2.4 and
5 Gigahertz (GHz) bands. Ex. 1001, col. 1, ll. 22–25. Examples are the
standard wireless protocols known as 802.11a and 802.11b. Id. at ll. 25–32.
Systems incorporating these standards were incompatible and could not
work together. Id. at ll. 32–34.
A new standard referred to as 802.11g was proposed as a high data
rate extension of the 802.11b standard at 2.4 GHz. Developing this new
standard presented several significant technical challenges. Id. at ll. 35–41.
For example, it was desired that devices using the new standard be able to
communicate at data rates higher than the standard 802.11b rates in the 2.4
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GHz band. In some configurations, it was desired that devices using the
802.11b protocol and new 802.11g devices be able to coexist in the same
WLAN environment or area without significant interference or interruption
from each other. It also was desired that 802.11g and 802.11b devices be
able to communicate with each other at the standard 802.11b rates. Id. at
ll. 41–51.
As discussed infra, the named inventors, Webster and Seals, were part
of a team at Intersil that worked with IEEE developing the new standard and
addressing the problems outlined above. The ʼ195 patent resulted from this
work.
B. The Asserted Grounds
The Board instituted trial on the following grounds:
References Basis Claim(s)
Challenged
Webster and Castro § 103(a) 1
Webster, Castro, IEEE 802.11a, and
IEEE 802.11b
§ 103(a) 2–6 and 9–23
Webster, Castro, IEEE 802.11a, IEEE
802.11b, and Jamal9
§ 103(a) 7 and 8
Webster, Castro, and Agee10 § 103(a) 23

As the above indicates, the Webster patent11 is relied upon as the
principal reference in each of the patentability challenges to the ʼ195 patent
in this trial. Webster’s availability as prior art is, therefore, potentially
dispositive of those challenges.

9 Rahman Jamal et al., Filters (CRC Press 1999).
10 U.S. Patent No. 6,128,276 (Oct. 3, 2000).
11 The same Webster is named as a co-inventor of the ʼ195 patent.
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C. The Status of Webster As Prior Art Under 35 U.S.C. § 103(c)
Webster is relied on as prior art under 35 U.S.C. § 102(e) and
therefore is subject to the provisions of § 103(c). Because Webster is the
principal reference in all challenges, if Webster is disqualified as prior art
under § 103(c), those challenges all fail. See supra.
In an inter partes review, the burden of proof is on the Petitioner to
prove unpatentability by a preponderance of the evidence. Dynamic
Drinkware, LLC v. National Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir.
2015). This burden never shifts to the Patent Owner. Id. However, the
burden of production, a separate burden, does shift once the Petitioner comes
forward with evidence establishing prior art. Id. at 1379–80. Thus, to
prevail on this dispositive issue, Patent Owner must overcome Webster by
establishing that § 103(c) applies to the fact of this case.
First, Patent Owner must establish the date on which the invention of
the ʼ195 patent was made. See 35 U.S.C. § 103(c) (“the subject matter and
the claimed invention were, at the time the claimed invention was made,
owned by the same person or subject to an obligation of assignment to the
same person” (emphasis added)). The parties agree that this date is July 6,
2001, the date on which the provisional application that led to the ʼ195
patent was filed. Hearing Tr. 130:17–19.
Next, Patent Owner must establish that as of that date, both the ʼ195
patent and the Webster patent were either “owned by the same person or
subject to an obligation of assignment to the same person.” 35 U.S.C.
§ 103(c)(1). The application for the Webster patent was filed on June 2,
2000. PO Resp. 9 (citing Ex. 1004). One day prior, the named inventors,
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Mark A. Webster, Steven D. Halford, and Richard D. Roberts, executed
assignments of the application to Intersil Corporation. Id. (citing Ex. 2008).
The parties stipulate that at the time of this assignment, Intersil
Corporation was a wholly owned subsidiary of Intersil Holding, which, in
May 2001, changed its name to Intersil Corporation. Ex. 2068. At the same
time, Intersil Corporation changed its name to Intersil Communications, Inc.
Id. Finally, a new company, Intersil Americas, Inc. was created in
November 2000. Id. This complex corporate structure is summarized in the
following chart provided by Patent Owner:

The above chart presented by Patent Owner illustrates the corporate
relationship among certain Intersil entities on the dates specified. A vertical
relationship in the chart represents 100% ownership by the entity appearing
below. PO Resp. 6. For convenience, and to avoid confusion due to the
corporate name changes, the parties refer to Intersil Corporation (and Intersil
Communications, Inc.) as “Intersil Sub 1.” They refer to Intersil Americas,
Inc. as “Intersil Sub 2.” We will, therefore, adopt those names for this
Decision. The information in the chart is not disputed by the parties with
one exception: Petitioner disputes that Intersil Sub 1 was a “direct wholly-
owned subsidiary” of Intersil Communications on July 6, 2001, when the
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provisional application was filed. Ex. 2068, 1. We discuss this contention
infra.
As noted, the Webster patent was assigned in writing to Intersil
Corporation (Intersil Sub 1) on June 1, 2000. Thus, the undisputed evidence
demonstrates that as of July 6, 2001, Intersil Sub 1 owned the Webster
patent by virtue of a written assignment. Pet. Reply 1 (admitting that “the
[Webster] Patent was owned by Intersil Sub 1 as of the July 6, 2001 priority
date of [the] ʼ195 Patent”). Patent Owner must therefore show that Webster
and Seals, co-inventors named in the ʼ195 patent, either assigned or had an
obligation to assign their patent to the “same person” as the Webster patent
as of July 6, 2001.
Despite the granting of additional discovery from Intersil, Webster,
and Seals, Patent Owner has not been able to prove the existence of a written
agreement assigning the ʼ195 patent prior to May 8, 2002. On that date,
Webster and Seals assigned the ʼ195 patent application, which was filed two
days later, on May 10, 2002, to Intersil Sub 2. Ex. 2010. However, while
there is some evidence to the contrary, we determine that Patent Owner has
demonstrated that both Webster and Seals were employed by Intersil Sub 1
on July 6, 2001, the invention date of the ’195 patent.
The contradictory evidence is a declaration of Mr. Webster executed
January 28, 2015, in which he identifies his employer as Intersil Americas
Inc. (Intersil Sub 2). Ex. 1021 ¶ 7. In a subsequent declaration, executed
February 18, 2015, and at his deposition, Mr. Webster clarifies this
statement. Ex. 2038 ¶ 26. He explains in this declaration that he based this
earlier statement on looking at the corporate name in the May 8, 2002,
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assignment assigning the Webster patent application to Intersil Americas
(Sub 2). He assumed that the assignee’s name in the agreement was also his
employer. Id. At his deposition he testified that he did not understand the
legal or corporate relationship between Intersil Corporation (Sub 1) and
Intersil Americas, Inc. (Sub 2). Ex. 2058, 51:18–21. We find this
explanation credible, especially in light of the complex corporate
organization of Intersil and fact that Mr. Webster is not a lawyer. Id. 53:23–
24. We therefore find credible the evidence, including Mr. Webster’s
testimony (Ex. 2038 ¶ 28), Mr. Seals’ pay stub (Ex. 2060), 2001 W-2 form
(Ex. 2061),12 and related testimony and documentation, that both Webster
and Seals were employed by Intersil Sub 1 when the invention of the ʼ195
patent was made on July 6, 2001.
Specifically, we find credible the testimony of Intersil’s Chief
Intellectual Property Counsel, Mr. Bernkopf, in his declaration and
supplemental declaration, among other things, linking the employer
identification number (EIN) appearing on Mr. Seals’ W-2 with Intersil Sub
1. Ex. 2069 ¶ 17; Ex. 2090 ¶¶ 6–9. Likewise, we find credible the
documentary evidence to the same effect from the Florida Department of
State attached to the Declaration of Annette Vonder Mehden. Ex. 2093,
Exs. A–D.
Patent Owner, however, has been unable to prove the existence of a
written employment agreement that contractually would require either Mr.
Webster or Mr. Seals to assign his patent rights to Intersil. Webster testified

12 Exhibit 2077 is a version of the W-2 form with confidential information
(Mr. Seals’ social security number) redacted.
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that he had no recollection of signing an employment agreement. Ex. 2058,
53:17–22. Seals testified that while it was “likely” he signed such an
agreement, he could not say “definitively.” Ex. 2059, 25:7–9. Accordingly,
there is insufficient evidence that, as of July 6, 2001, a written agreement
existed obligating Webster and Seals to assign their invention to Intersil Sub
1 or any other Intersil entity.
That determination is not dispositive of the § 103(c) issue, however,
for Patent Owner further contends that even in the absence of a written
agreement, Intersil Sub 1 owned the subject matter of the ʼ195 patent by the
terms of employment of Webster and Seals. PO Resp. 15–17. In support,
Patent Owner cites testimony from the co-inventors as to their understanding
that their employer owned their inventions. Petitioner responds that such a
“vague recollection” is insufficient evidence of a contractual obligation. Pet.
Reply 3. We agree with Petitioner that Patent Owner has failed to prove the
existence of an express agreement between the co-inventors Webster and
Seals of the ʼ195 patent to assign their rights to Intersil. Patent Owner has
been unable to produce a written agreement, and the understandings of
Webster and Seals are insufficient evidence that an agreement existed and of
its terms.
Patent Owner’s second argument is based on the common law right of
an employer in the inventions of an employee who was employed to invent.
PO Resp. 17–24. See United States v. Dubilier Condenser Corp., 289 U.S.
178 (1933). In Dubilier Condenser, the Supreme Court distinguished
between individuals who were employed to make inventions and those
whose employment is general. In the words of the Court:
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One employed to make an invention, who succeeds, during his
term of service, in accomplishing that task, is bound to assign to
his employer any patent obtained. The reason is that he has
only produced that which he was employed to invent. His
invention is the precise subject of the contract of employment.

289 U.S. at 187. Patent Owner contends that “[e]ven if no contract had
existed, Intersil nonetheless owned the inventions of the ʼ195 patent.” PO
Resp. 17. The parties agree that Florida common law applies to the
resolution of this issue. Hearing Tr. 120:17–20. Patent Owner, therefore,
relies on Florida case law and a Federal Circuit decision applying Florida
law to support its theory that an implied-in-fact contract of assignment
existed between Webster and Seals and their employer, Intersil Sub 1. PO
Resp. 18–24.
In State v. Neal, 12 So. 2d 590 (Fla. 1943), Dr. Neal was employed as
an assistant in animal nutrition at the University of Florida. Initially, at
least, his employment was general. He was assigned to study the
digestibility coefficients and feeding value of dry citrus waste (refuse from
grapefruit and orange canning factories). The project was extended to
include methods by which the dried citrus wastes could be made available as
dairy feed. Id. at 590.
The problem was to find a better method of excluding the moisture.
While working on the project, Dr. Neal developed a method and set out to
have it patented. After conferring with representatives of the University, he
proceeded to Washington, D.C., where he employed an attorney and applied
for a patent on his discovery. He applied for the patent in his own name, and
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when it issued, assigned his application to Citrus Patents Co., one of several
parties who were working on a similar project. Id. at 590–91.
A lower court held that the contract between Dr. Neal and his
employer was a general contract of employment. It did not contemplate a
contract to invent the processing question. Therefore, Citrus Patents was a
bona fide purchaser of the invention. Id. at 591. The Supreme Court of
Florida reversed. The Supreme Court held that while the contract was
general in its inception, once the special project was set up and Dr. Neal was
placed in charge, the contract was for the express purpose of accomplishing
the result that it accomplished. Id. Citing an earlier Florida decision, State
Bd. of Education v. Bourne, 7 So. 2d 836 (1942), the Court concluded that
while there was not an express contract to invent the process, the
circumstances showed an “unequivocal inference” that Dr. Neal’s
employment was for that express purpose. 12 So. 2d at 592 (quoting
Bourne). In reaching this conclusion, the Court looked at a number of
factors in the relationship between Dr. Neal and the project, including the
fact that he was placed in charge, gave the major portion of his time to it,
employed the laboratories and other facilities of his employer, and had his
expenses paid including expenses for obtaining the patent by his employer.
Id. at 591.
In Teets v. Chromalloy Gas Turbine Corp., 83 F.3d 403 (Fed Cir.
1996), the Federal Circuit applied Florida law to resolve a similar ownership
dispute. In Teets, the General Electric Aircraft Company asked DRB
Industries, a division of Chromalloy, to devise a method of manufacturing
the leading edge for a new composite fan blade for a turbine. DRB assigned
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Teets to be the chief engineer on the project. At the time, he was an
employee at will and had no written employment contract addressing
ownership of the inventive work. Id. at 405–06. Teets and others worked on
the project, which resulted in a solution to the problem (a hot-forming
process or HFP) and a patent application naming Teets as a co-inventor. Id.
at 406.
Teets later asserted ownership of the patent application and, after a
bench trial, the District Court concluded that Teets solely owned the process.
Id. On appeal, the Federal Circuit reversed. After reviewing the relevant
case law, including Dubilier, Neal, and Bourne, the Federal Circuit
concluded that the District Court had committed legal error by focusing on
“irrelevant facts” to find no implied contract. Id. at 408.
The Federal Circuit noted that the specific goal of the project was to
develop a one-piece leading edge for the fan blade. GE had approached
DRB to propose ways to apply the leading edge to the turbine blades. GE
specifically and repeatedly expressed a desire for a one-piece solution. Id. at
408. Teets had been assigned as chief engineer on the project and spent
about 70% of his time on it. After taking on the project and attempting
several solutions, Teets developed the solution. He reduced the invention to
practice using the DRB’s resources and employees, DRB’s shop tools and
materials, and on DRB’s time. DRB paid for the prosecution of the patent
application. More importantly, Teets repeatedly acknowledged DRB’s role
in the development of the process. The Federal Circuit concluded that these
“undisputed facts” showed an implied-in-fact contract of assignment of the
invention between Teets and DRB. Id.
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The Federal Circuit summarized its reasoning as follows:
DRB specifically directed Teets to devise a one-piece leading
edge for GE. Having directed Teets to that task, compensated
him for his efforts, paid for the refinement of the process, and
paid for the patent protection, Chromalloy owns the patent
rights in the HFP. The Florida Supreme Court’s decision in
Neal governs this case and compels the conclusion that Teets
entered an implied-in-fact contract to assign patent rights to
Chromalloy.
Id.
Patent Owner points to numerous similarities between the facts of this
case and those that persuaded the Federal Circuit to reverse the lower court
in Teets. PO Resp. 20–26. For example, the specific goal of the project was
to develop new technologies that would approve improve data rates of the
802.11b wireless standard, the subject matter of the ʼ195 patent. Ex. 2038
¶ 10. Webster’s role in this project was a “technical lead.” Ex. 2058,
21:15–24. Seals was recruited specifically to work on products using 802.11
technology. Ex. 2059, 11:25–12:6. Approximately 90% of Seals’s work at
Intersil was devoted to 802.11 products. Id. at 12:19–22.
Intersil provided Webster and his project team with the tools and the
resources to perform his work. Ex. 2038 ¶ 11. Most of the work was
performed at Intersil facilities in Florida. Id. Intersil provided Webster with
an office, computer, computer network access, servers, software to run
simulations, and paid all travel fees and related expenses for him to attend
IEEE meetings. Id. Simulations also were run by Seals on a work computer
provided him by Intersil using software provided by Intersil. Exhibit 2059,
20:13–21:9.
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The team was tasked with the particular project that led to the ʼ195
patent. Ex. 2059, 19:15–20:4. The members of the project team all were
employees of Intersil Corporation. Ex. 2058, 24:23–25. The assignments of
the team and projects were made by Intersil. Ex. 2059, 19:25–20:4. The
project related to improving products that Intersil was planning to sell.
Ex. 2059, 22:10–23. Intersil also paid all costs associated with filing the
application for the ʼ195 patent. Ex. 2058, 28:23–29:7; Ex. 2059, 23:17–25.
Patent Owner relies on the testimony from both Webster and Seals to
establish an “unequivocal inference” of an implied in fact contract to assign
their inventions to their employer. PO Resp. 19–24. For example, Webster
testified that part of his responsibilities as an engineer was to invent in the
area of 802.11. Ex. 2058, 26:9–11. Intersil specifically assigned Webster to
work on the project that led to the ʼ195 patent. Id. at 21:14–18. Webster
performed his work on the ʼ195 patent project primarily at Intersil’s facilities
in Florida. Id. at 23:11–18. Intersil provided him with the tools and
resources necessary to perform his work. Id. at 23:19–24:4.
Webster testified that Intersil fully compensated him for his inventive
work. He received his salary and bonuses for each patent application he
submitted and an additional bonus when a patent issued. Id. at 17:5–23.
Webster testified that Intersil paid all expenses for prosecuting the ʼ195
patent application. Id. at 28:23–29:7. Webster has executed seventeen
patent assignments in favor of Intersil. Ex. 2038 ¶¶ 22–24.
Seals testified that he was hired specifically to work on 802.11
products. Ex. 2059, 11:25–12:10. Intersil specifically assigned him to the
team tasked with the project that led to the ’195 patent. Id. at 19:24–20:7.
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He devoted about 90% of his time to working on 802.11 products. Id. at
12:19–22. Seals performed his work on the ’195 patent project primarily at
Intersil’s facilities in Florida. Ex. 2059, 21:13–19. Intersil provided him
with the necessary tools and resources for his work. Id. at 20:13–21:9.
Seals’ compensation included an annual salary, a bonus for each
patent application that he submitted, and an additional bonus for each patent
that issued. Id. at 17:15–18:4. He testified that he understood his salary was
full compensation for his inventive work. Id. at 18:13–16. Intersil paid all
travel and related expenses for Seals to attend IEEE meetings around the
world. Id. at 21:20–22:9.
Petitioner denies that there was any obligation to assign the patent
under Florida law. Pet. Reply 4–8. Petitioner contends that Patent Owner
has failed to prove which Intersil entity employed the inventors. Id. at 5.
We are not convinced by this argument. We determine that the
preponderance of the evidence, including the testimony of the co-inventors
and the documentary evidence provided by Mr. Seals, Intersil, and the
declarants Bernkopf and Vonder Mehden, demonstrates that Intersil
Corporation (Intersil Sub1) employed both Webster and Seals in 2001. See
supra.
Next, Petitioner contends that with no written agreement Patent
Owner cannot show there is an “unequivocal inference” that Webster and
Seals were hired for the “express purpose” of making the invention of the
ʼ195 patent. Pet. Reply 5–8. We are not convinced by this argument. In the
cases relied on by Patent Owner, the outcome did not turn on whether or not
there was a written agreement. Instead, the Court looked to the facts of the
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employer-employee relationship in each of the cases without regard to
whether there was a written agreement. We determine that the facts recited
above concerning Intersil’s employment of Webster and Shields meet this
standard.
Petitioner relies heavily on the Florida District Court of Appeals’
decision in City of Cocoa v. Leffler, 803 So. 2d 869 (Fla. Dist. Ct. App.
2002). Pet. Reply 6. This reliance is misplaced. The invention in that case
involved removal of hydrogen sulfide gas from drinking water. The City
created an in-house design team to improve upon a proposed system that
used aeration. During experimentation with aeration designs, a system
malfunction led to a buildup of bacteria, which was effective in removing
hydrogen sulfide from the water. The team ultimately developed a system
using bacteria for removing hydrogen sulfide from the water and applied for
patents on the process. When three of the team members, including Leffler,
refused to assign their rights to the City, the City sued. 803 So. 2d at 870–
71. After reviewing the relevant case law, including Bourne and Neal, the
Court concluded that, on the facts before it, there was no “unequivocal
inference” that Leffler had been given the task of producing the invention.
Id. at 873.
We are not persuaded that Leffler is applicable to the facts of this case.
Unlike the invention here, the invention in Leffler was serendipitous. Id. at
873–74 (“The evidence was overwhelming that the invention was the
unanticipated result of a system malfunction.”). The team leader in Leffler
testified that he never told team members to invent new technology and
never anticipated that anything would be invented. Id. at 871–72. Leffler
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agreed with other team members that the discoveries leading to the invention
were “a surprise.” Id. at 872.
Leffler also testified that he often worked on the project beyond
normal working hours, for which he was not compensated. Id. The majority
of the parts and materials used in the testing were provided by sources
outside the City. Id. Leffler objected to the City paying for the patent. Id.
The trial court determined that Leffler had no history of inventing and the
City did not expect him to invent anything. Id. As the Court summarized:
“All of the witnesses agreed that Leffler was not asked or instructed to
invent anything and the inventions were a surprise.” Id. at 873.
We are persuaded that these facts, among others, distinguish Leffler
from this case. We are not persuaded, either, by Petitioner’s characterization
of Mr. Webster’s role as “managerial.” Pet. Reply 6. The record
demonstrates that apart from certain administrative duties such as selecting
team members, his assignment was technical in nature.
Nor are we persuaded by Petitioner’s argument that the ʼ195 patent
would have been owned by the “wrong Intersil sub,” namely, Intersil Sub 2.
Pet. Reply 8–13. As discussed above, we are persuaded by the evidence that
both inventors were employed by Intersil Sub 1 in July 2001, and therefore
their obligation to assign the patent was to Intersil Sub 1 and not Intersil
Sub 2. We therefore do not need to reach the question of whether Intersil
Sub 1 and Intersil Sub 2 are the “same person” under § 103(c). PO Resp. 9–
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13. Consequently, the dispute over whether Intersil Sub 2 was a “direct
wholly-owned subsidiary” of Intersil Sub 1 is moot. See infra.13
Finally, we address a new argument presented at the oral hearing.
Petitioner alleged existence of a conflict between the written assignment
executed by Webster and Seals in May 2002 (Ex. 2010) and the claim that
their employer held the rights to the ʼ195 patent in July 2001. Hearing Tr.
131:6–132:22. We are not convinced there is such a conflict. The written
assignment does not contain a covenant that the inventors “had the rights” in
the patent as Petitioner’s counsel stated. Hearing Tr. 132:6–8. Instead, the
covenant states “I have full right to convey the entire interest here assigned.”
Ex. 2010, 3. The rights assigned include “my entire right, title, and interest
in, to, and under the said invention.” Id. In other words, by transferring
“my entire right,” the inventors were assigning whatever rights they held in
the invention to the assignee. There is no representation or covenant that
they had any ownership rights in the invention, much less the “entire interest
in the inventions” as Petitioner’s argument stated. Hearing Tr. 131:22–
132:2. The covenant in the agreement is that they had the power to convey
whatever rights they held.
For a similar reason, we do not credit Petitioner’s related argument
that Patent Owner lacks “standing” because it has not shown existence of an
assignment of the ʼ195 patent from Intersil Sub 1 to Intersil Sub 2. Pet.
Reply 8 n.1. Patent Owner does not have to show that Intersil Sub 1
“owned” the ʼ195 patent in 2001 as Petitioner suggests. Id. Under

13 We note that while Petitioner apparently disputes this fact, it has produced
no evidence to rebut the proofs offered by Patent Owner.
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35 U.S.C. § 103(c), it is sufficient to show that Webster and Seals had an
obligation to assign the patent to Intersil Sub 1. Patent Owner’s evidence
convinces us that there was such an obligation. As noted supra, this
obligation in 2001 does not conflict with the later assignment of the patent to
Intersil Sub 2.
In summary, we are persuaded that Patent Owner has established that
35 U.S.C. § 103(c) applies and that Webster is disqualified as prior art.
III. MOTIONS
Both parties filed motions to exclude evidence. Patent Owner’s
motion (Paper 61) is directed to excluding a patent and related expert
testimony presented with Petitioner’s Reply. As the proffered evidence does
not relate to the § 103(c) issue, we do not need to reach Patent Owner’s
motion and, therefore, dismiss it as moot.
Petitioner’s motion to exclude (Paper 56, “Motion”) seeks to exclude
the pay stub (Ex. 2060) and W-2 form for 2001 (Ex. 2061) produced by
Mr. Seals, as well as portions of Mr. Bernkopf’s testimony and exhibits
(Ex. 2069). Petitioner challenges the Seals pay stub and W-2 as hearsay.
Motion 2. Patent Owner relies on the address on the pay stub and the
Employer Identification Number (EIN) on the W-2 as evidence that Seals
was employed by Intersil Corporation (Intersil Sub 1) in 2001. See supra.
Petitioner contends that the Florida address on the pay stub and the W-2
“conflicts with other evidence of record.” Motion 3. According to
Petitioner, the alleged conflict “indicate[s] the unreliable nature of the
evidence.” Motion 5.
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Patent Owner responds (Paper 68, “Motion Opp.”) that the objections
to the evidence were untimely because they were not made at the Seals
deposition, where the documents were introduced as exhibits. Motion Opp.
2–4. Patent Owner responds on the merits by arguing that the exhibits are
not hearsay because neither was offered for truth of an assertion. Id. at 4–6.
As to the W-2 form containing the EIN, Patent Owner contends that it
is not hearsay because it is not an “assertive writing.” Id. at 4–5. Patent
Owner relies on cases such as United States v. Snow, 517 F.2d 441, 445 (9th
Cir. 1975), where a tape bearing the defendant’s name on a briefcase where
a gun was found was admitted as circumstantial evidence that the defendant
possessed the weapon. Id. at 5. As to the pay stub, Patent Owner argues
that is not offered for truth, i.e., that Seals was paid the amount shown, but
as evidence of Seals’ employment in 2000. Alternatively, Patent Owner
asserts it is a non-hearsay “verbal act.” Id. at 6.
We agree with Patent Owner and are persuaded that the W–2 form
and pay stub should not be excluded. Petitioner’s argument based on alleged
inconsistencies goes to the weight, not the admissibility, of the evidence. As
to the hearsay objections, we agree with the reasoning of Snow, supra, that
the EIN and other information are not assertions subject to the hearsay rule.
To the same effect are United States v. Koch, 625 F.3d 470, 480 (8th Cir.
2010) (computer flash drive with manufacturer’s label “China” not
inadmissible hearsay to prove place of manufacture); United States v.
Bowling, 32 F.3d 326, 328 (8th Cir. 1994) (manufacturer’s name stamped on
firearm not hearsay). We are persuaded that the EIN and other identifying
information on the W-2 and pay stub, like the examples in those cases, are
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circumstantial evidence of Seals’employment and not assertions by Intersil.
We agree that the pay stub is not hearsay and should be admitted.14
Although Petitioner challenges this evidence as untrustworthy, we are
mindful of the fact that Petitioner had a chance to cross-examine Mr. Seals
on its content.
Turning to the Bernkopf declaration testimony, Petitioner asserts that
paragraph 18 should be excluded as an improper opinion and legal
conclusion. Motion 5. As we do not rely on this portion of his testimony,
we do not reach this issue and thus dismiss this part of the motion as moot.
Petitioner seeks also to exclude the other substantive paragraphs of Mr.
Bernkopf’s declaration (Ex. 2069 ¶¶ 7–9, 11, and 13–18) and related
Exhibits A, C, E, and F on various grounds. Motion 5–10.
First, Petitioner contends Mr. Bernkopf’s statements “are of little
value” because they are his “personal statements,” not those of Intersil.
Motion 6. This argument, at best, goes to the weight of Bernkopf’s
testimony, not its admissibility. Mr. Bernkopf testified that his declaration
was based on his personal knowledge “as Chief Intellectual Property
Counsel [for Intersil Corporation].” Ex. 2069 ¶ 5. He further testified that
in connection with his position he was required “to maintain current
knowledge of the names and relationships of the corporate entities that are
the constituents of Intersil Corporation.” Id. ¶ 3. Furthermore, Petitioner
did not challenge Mr. Bernkopf on these or any other statements in his

14 We would, in any case, determine that the “residual exception” of Fed. R.
Evid. 807 applies, for the reasons advanced by Patent Owner. See Motion
Opp. 6–8.
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testimony through cross-examination. We are not persuaded, therefore, that
whether Bernkopf was or was not “offered as a corporate witness” has any
bearing on the credibility or admissibility of his testimony. Cf. Motion Opp.
9–10.
Nor does it matter that Mr. Bernkopf’s testimony was presented by
declaration, as this is permitted under our rules. 37 C.F.R. § 42.53(a). There
was no requirement to “formalize” Bernkopf’s declaration with a deposition,
as Petitioner contends (Pet. Reply to Motion Opp. 1 (Paper 72)), nor is there
any indication that Petitioner was denied the opportunity to cross-examine
him or any other declarant. Our rules provide the opportunity to cross-
examine a declarant’s testimony as “routine discovery,” automatically
available to a party without Board authorization. 37 C.F.R. § 42.51(b)(1)(ii).
Petitioner also objects to the Bernkopf testimony as hearsay. Motion
6–10. We are not persuaded by this argument. Mr. Bernkopf stated that his
testimony as to Intersil’s corporate relationships was based on his personal
knowledge as Intersil’s Chief Patent Counsel. He documented his testimony
with the corporate business records attached as exhibits. When Petitioner
objected to the testimony and exhibits, Patent Owner provided additional
declarations from Mr. Bernkopf and Ms. Vonder Mehden. Petitioner made
the tactical decision not to cross-examine either of these witnesses. And, as
Patent Owner points out, the challenge is mostly moot in light of Petitioner’s
prior stipulation as to many of the same facts presented in the declarations.
Motion Opp. 10. Under the circumstances, we conclude that the challenged
Bernkopf testimony and exhibits are admissible and provide credible support
for Patent Owner.
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We have considered Petitioner’s additional arguments and are not
persuaded by them. We, therefore, deny Petitioner’s motion to exclude
Exhibits 2060, 2061, and paragraphs 7–9, 11, and 13–18 and Exhibits A, C,
E, and F of the Bernkopf testimony (Exhibit 2069).15
Patent Owner also has filed two motions to seal. The first (Paper 47)
requests sealing a version of Mr. Seals’ W-2 containing his social security
number (Ex. 2061), Mr. Bernkopf’s declaration (Ex. 2070), and the
confidential version of Patent Owner’s Response (Paper 48). The second
(Paper 69) requests sealing of Mr. Bernkopf’s supplemental declaration (Ex.
2090). The motions are unopposed. Non-confidential, public versions of
each of these documents have been filed. We have reviewed motions and
determined that there is good cause to grant them. The motions, therefore,
are granted, with one caveat. With respect to Mr. Bernkopf’s testimony, we
observe that the relationship between various Intersil entities has been
discussed in general terms in several non-confidential submissions in this
proceeding, as well as at oral argument. Such information is therefore not
deemed confidential.
To the extent that we rely on this testimony and any other information
for which confidentiality is claimed, we determine that the general nature of
the discussions of such information in this Decision does not require that the
Decision be treated as confidential.

15 Our ruling applies also to the redacted versions of those exhibits,
identified supra.
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IV. ORDER
In consideration of the foregoing, it is
ORDERED that this is a final written decision of the Board under
35 U.S.C. § 318(a). Parties to the proceeding seeking judicial review of the
decision must comply with the notice and service requirements of 37 C.F.R.
§ 90.2;
FURTHER ORDERED that Petitioner has failed to prove by a
preponderance of the evidence that claims 1–23 of U.S. Patent 6,754,195 B2
are unpatentable;
FURTHER ORDERED that Patent Owner’s Motion to Exclude
Evidence is dismissed;
FURTHER ORDERED that Petitioner’s Motions to Seal are granted;
and
FURTHER ORDERED that Petitioner’s Motion to Exclude Evidence
is denied insofar as it relates to Exhibits 2060, 2061, and paragraphs 7–9, 11,
and 13–18 and Exhibits A, C, E, and F of the Bernkopf Declaration (Ex.
2069) and the redacted public versions of those exhibits. The motion is
dismissed as moot insofar as it relates to paragraph 18 of the Bernkopf
declaration.

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PETITIONER
Walter Renner
Jeremy Monaldo
Indranil Mukerji
Adam Shartzer
David Holt
Joseph V. Colaianni, Jr.
FISH & RICHARDSON, P.C.
axf@fr.com
IPR27410-0023IP1@fr.com
IPR27410-0021IP1@fr.com

PATENT OWNERS

Herbert D. Hart, III
Jonathan R. Sick
Peter McAndrews
Michael Carrozza
Aaron Barkoff
Kirk Vander Leest
Michael Cruz
McANDREW, HELD & MALLOY, LTD.
hhart@mcandrews-ip.com
jsick@mcandrews-ip.com
pmcandrews@mcandrews-ip.com
mcarrozza@mcandrews-ip.com
abarkoff@mcandrews-ip.com
kvanderleest@mcandrews-ip.com
mcruz@mcandrews-ip.com

James Hietala
Tim Seeley
INTELLECTUAL VENTURES I LLC
jhietala@intven.com
tim@intven.com